• WTR webinar featured speakers including former Amazon and Twitter IP counsel
  • Looked at how practitioners must expand skill set to include reputational risk
  • Issues included preparing for Trump criticism and responding to Black Lives Matter

In the most recent WTR webinar, two brand experts revealed why trademark professionals must adapt and expand their skill-set in response to a time of coronavirus, hyper-partisanship, and cancel culture – explaining why the development of the trademark role to monitor for, and analyse, the risk of brand criticism will “lead to innovation and deeper customer loyalty”.

The webinar, “Brand protection at a time of hyper-criticism”, explored how trademark professionals can make the case to their companies (or clients) that customer criticism – especially in the public sphere – is actually an opportunity to enhance brand reputation. The two expert speakers were Steve Coates, founding partner of Coates IP and former IP counsel at Amazon.com and Twitter, and John Berard, CEO of Vox Populi Registry (the company that contracted with ICANN to manage the dotSucks top level domain).

Early into the discussion, Berard explained how the trademark and domain name function at businesses must expand their monitoring efforts – from potential IP infringement to brand sentiment. “IP professionals are well positioned to become even more essential to their clients and companies by telling them what they hear about their brands and explaining how IP can leverage the opportunity of what they have heard. Therefore, what should be listened for is what would be most useful to strengthen a company’s market position - of course, I’m talking about criticism. So while listening to criticism may seem like a negative, it can lead to innovation and deeper custom loyalty.”

Expanding on that point, Coates notes that “PR risk is now part of the IP job” and, for that reason, trademark practitioners must now analyse risk across three areas – legal risk (“which all attorneys know and love”), practical risk (“how likely is it that a legal risk is actually going to happen?”, an approach that  “requires us to quantify ambiguity”), and PR risk (“meaning negative response to brand actions”).

He expanded: “The world is becoming increasingly online, we live in an age of cancel culture where the predominant voice wins the vote of the customer. So trademark professionals must be good at assessing legal risk and the practical risk of understand what’s going to happen in the world, and now you have to contend with what people think and the fickleness of social discourse in this online age we now live in – trademark practitioners now basically need to be social scientists.”

What does this mean in an everyday sense? Coates outlined the questions he asks in a case of trademark misuse, covering the three risk areas: “Firstly, does it infringe our trademark? (that’s the legal risk). Secondly, how likely am I to be able to take it down, and should I? (that’s the practical risk) And thirdly, how is the infringer or the public going to react if I take it down? (that’s the PR risk). We all need to ask questions in each of the three risk areas for every part of our job.”

Unsurprisingly, many current news events dominated the discussion – with positive and negative feedback on how brands have reacted to certain situations in recent months. For example, Berard claimed that food brand Goya’s recent response to the Trump family’s endorsement should not be seen as a case study to follow. “There was no way of knowing that the president would single out Goya in the way he did, it wasn’t on anyone’s agenda, and it caused an incredible backlash against the company – overlaying on Goya the political divisions that exist in the United States,” he said. “It was shocking to me – not only were they not prepared with something to say after the backlash, there was an admission that there had been no anticipation that being approximated with the president could cause a problem. There seemed to be a lack of awareness on the part of the Goya team, even though their CEO attended a meeting with the president.”

Indeed, for that reason, Coates says that “anticipation” is key in any move by a brand into the political arena, and “having a very purposeful and intelligent response drafted in advance” can be critical. Berard agrees, and says trademark counsel must be canny when helping their clients in the political realm. “Politics is a difficult road to navigate – a politician needs 51% of the voting population, but in business you’re constantly wanting to expand your customer base, so there’s a conflict between the exclusionary approach to politics to the necessarily inclusionary approach of business,” he added. “That alone can cause friction when the two collide. For that reason, the pressure on trademark professionals is to see a wider horizon – to see further and understand the greater landscape.”

Building on that point, Coates concluded that when it comes to various current events – such as the brand response to coronavirus, or partisanship, or social justice issues – trademark professionals have a crucial part to play. “[We are] ambassadors and protectors of the reputation of a company – that means the questions that are brought to the table, such as whether something should be done even if it is legally okay, are important. Some folk see themselves as just speaking for the legal or trademark risk of situations, but taking a step back and talking about reputational risk is a huge opportunity to add value to the entire trademark profession.”

This article first appeared in World Trademark Review. For further information please visit https://www.worldtrademarkreview.com/corporate/subscribe